istock-1870211042
6 February 2018Trademarks

WIPR survey: Readers back EU court in vulgar TM decision

WIPR readers have backed the EU General Court’s confirmation that a trademark application for ‘Fack Ju Göhte’ should be rejected because of vulgar and offensive connotations.

On January 24, the court quashed a German film company’s attempt to register comedy film title ‘Fack Ju Göhte’ as an EU trademark.

The film company, Constantin Film Produktion, had appealed against a decision made by the European Union Intellectual Property Office’s Fifth Board of Appeal which found that the pronunciation of the word mark resembled that of the English expression ‘fuck you’ and that it would be inappropriate to allow a mark with sexual connotations to be used in such a way.

Unfortunately for Constantin, the General Court backed the board of appeal, holding that the misspelling of the words doesn’t make the mark satirical or playful.

“It is clearly and obviously vulgar for everyone who a) knows English and b) can read. Moreover it might be offensive to Goethe's fans,” said one respondent.

The appeal board considered the word ‘göhte’ as being intended to refer to writer Johann Wolfgang von Goethe, but found that he should not be posthumously insulted in such a degrading manner.

Other respondents said that the applied-for mark was evidently vulgar, while one respondent went on to say that vulgar impressions violate an ethical code of conduct.

But while 57% of respondents agreed with the court’s decision, the other 43% did not.

“Dangerous weapons and sexual products can be patented, why should a seemingly offensive trademark be rejected? Why do trademarks have to be deemed as un-offensive in order to be granted?” asked one reader.

Another claimed that the opinion is old-fashioned, while others stated that the mark was not vulgar.

“Vulgarity is a moving target determined by community standards of the moment, which are themselves always changing. The standards for registration should not be so malleable as to be responsive to community standards. While it may be vulgar it is still a trademark and the public will determine its success or failure. It should be registered,” noted one reader.

In response to the question, one reader stated that if someone wants to use an offensive mark, they should be able to.

They added: “It may have some market traction, but if it falls foul of other laws, eg against inciting intolerance or race hatred, other areas of law will pick it up and stop its illegal use.”

Last June, the US Supreme Court deemed the government’s ban on disparaging trademarks unconstitutional, handing a win to rock band The Slants and overturning more than 70 years of legal practice.

This was followed, six months later, by the US Court of Appeals for the Federal Circuit ruling that the Lanham Act’s ban on “scandalous and immoral” trademarks is unconstitutional.

For this week’s question, we ask: An advocate general at the CJEU  said that trademarks combining colour and shape may be refused or declared invalid under EU law. Do you think this was right call? Click  here to answer.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today’s top stories

L’Oréal secures patent win at UK court

Conor McGregor in the ring over multiple TM oppositions

Advocate general issues bad news to Louboutin over red-sole TM

Samsung asks US court to block Huawei’s Chinese injunction

Andrei Iancu confirmed as new USPTO director

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Trademarks
24 January 2018   A German film company’s attempt to register comedy film title ‘Fack Ju Göhte’ as an EU trademark has been quashed due to its vulgar and offensive connotations.